Abstract

http://ssrn.com/abstract=1982713
 
 

Footnotes (269)



 


 



The Infringement Continuum


Bernard Chao


University of Denver Sturm College of Law

January 10, 2012

Cardozo Law Review, Vol. 35, 1359, 2014
U Denver Legal Studies Research Paper No. 11-28

Abstract:     
For many years, patent law has struggled with the issue of permissible claim scope. A patent’s specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations; suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after arising technology.

Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill-suited for patent law. Under these doctrines, as a claim encompasses subject matter further and further away from what the specification describes, there is a point where the inventor suddenly loses all rights. These outcomes make sense when all trespasses are considered equal wrongs. However, in reality, there is an infringement continuum. At one end of the continuum, infringement can look exactly like the invention described by a patent. That infringement should be treated far more seriously than infringement that resides at the other end of the continuum and looks very different from the invention.

Consequently, I propose a new theoretical framework that ties patent disclosure doctrine to the remedies the law provides. Although I would continue to use the claims to determine infringement, I suggest that the specification be used to assess the remedy. Specifically, I suggest replacing the current lost profits/reasonable royalty framework with one based on royalties that consider disclosure principles. The size of the royalty would be determined by comparing the infringement to the patent specification and adjusting the royalty based on the degree of similarity.

The proposal improves on existing doctrines in two fundamental ways. First, instead of offering binary outcomes, the proposed remedies are highly adjustable. Therefore, they are well suited for addressing the full infringement continuum. Second, this proposal doesn’t just focus on the patentee’s injury like the current law. Rather, it advances the public interest by optimizing incentives for both initial and follow-on innovators.

Number of Pages in PDF File: 56

Keywords: patent, remedies, claim scope

JEL Classification: O31, O34

Accepted Paper Series





Download This Paper

Date posted: January 10, 2012 ; Last revised: July 13, 2014

Suggested Citation

Chao, Bernard, The Infringement Continuum (January 10, 2012). Cardozo Law Review, Vol. 35, 1359, 2014; U Denver Legal Studies Research Paper No. 11-28. Available at SSRN: http://ssrn.com/abstract=1982713 or http://dx.doi.org/10.2139/ssrn.1982713

Contact Information

Bernard H. Chao (Contact Author)
University of Denver Sturm College of Law ( email )
2255 E. Evans Avenue
Denver, CO 80208
United States
Feedback to SSRN


Paper statistics
Abstract Views: 615
Downloads: 52
Download Rank: 234,696
Footnotes:  269
Paper comments
No comments have been made on this paper

© 2014 Social Science Electronic Publishing, Inc. All Rights Reserved.  FAQ   Terms of Use   Privacy Policy   Copyright   Contact Us
This page was processed by apollo8 in 0.266 seconds